> FAQ

GENERAL INFORMATION

 

WHAT IS A TRADE MARK?

A trade mark is any sign that distinguishes the goods and services of one trader from those of another.
It’ s designated by the following symbols:

 

– TM (for an unregistered trademark, that is, a mark used to promote or brand goods);

– SM (for an unregistered service mark, that is, a mark used to promote or brand services);

®  (for a registered trademark).

 

In Italy , a mark must meet two requirements in order to be registered: it must be distinctive and capable of graphic representation.


WHY REGISTER A TRADEMARK?

Registering a community mark provides the holder with the exclusive right to use it and with effective protection in Italy against copying, imitation, misappropriation, forgery or use of its reputation.


WHAT SIGNS CAN CONSTITUTE A MARK?

A mark can include, for example, words, logos, letters, numbers, colours, pictures, three-dimensional forms, signs perceived by the senses (sound, smell, taste and touch) or a combination of these, provided it overcomes the graphic representation requirement.


WHICH SIGNS MAY NOT BE REGISTERED?

A sign may not be registered if it incurred in the following prohibitions:

 

Legal prohibition

 

Trademark contrary to public policy or to accepted principles of morality, devoid of any distinctive character, exclusively serves to designate the characteristics of the goods or service, cannot be represented graphically, is of such a nature that it may mislead the public, consists of a shape imposed by the nature of the product, consists a shape necessary to obtain a technical result or which gives a substantial value to the product or service, reproduces or imitates the name, coat of arms, flag, medals or other symbols of countries or intergovernmental organizations.

 

Relative prohibitions –Existence of an earlier marks.

 

A previous trademark (similar or identical) may be already registered in the name of a third party. In this case we are liable to opposition as well as judicial injunctions . To avoid such consequences, it’s strongly recommended to perform an anteriority trademark search, relying on specialized and experienced lawyers.

Existence of an unregistered mark or another earlier distinctive sign
More complex searches are available in order to examine previous commercial signs could be enforced to prevent subsequent trademark registrations.


ABOUT REGISTRATION WITH TRADEMARKITALY.IT

 

CAN I APPLY TO REGISTER MY TRADEMARK THROUGH TRADEMARKITALY.IT?

Yes you can. When you choose Trademarkitaly, a Lawyer and trademark attorney manages your trademark filing from the Merico Legal IP Law Firm, Rome, Italy. Actually, if you dont’ have a valid address in italy you can’t file the trademark application on your own. With our legal advice you enjoy the expertise of an experienced trademark law firm.


WHY REGISTER WITH TRADEMARKITALY.IT

When you request a filing through Trademarkitaly.it, you will be assisted constantly during the registration procedure in front of the Italian Trademark Office. In addition, we can provide you crucial legal services aimed to reduce the risk to receive objections and observations by the Italian Trademark Office, and to obtain the registration.

 

We can also provide you the following services:

 

1. TRADEMARK SEARCH AVAILABILITY OPINION.

2. LEGAL ADVICE ABOUT TRADEMARK INFRINGEMENT CLAIMS.

3. LEGAL ASSISTANCE TO FACE OBJECTIONS AND OPPOSITIONS DURING THE REGISTRATION PROCEDURE

 

If it’s important for you to protect your brand, it makes sense to be assisted by a trademark attorney.


WHY SHOULD I TRUST TRADEMARKITALY.IT

You should trust Trademarkitaly.it because we are established, based in Rome, Italy, and knowledgeable.  Trademarkitaly.it was created by the law firm Merico Legal upon the experience gained in the IPR-Helpdesk Project, a project funded by the European Commission (EC) set up in 1998 to be a central reference point for intellectual property inquiries and advice throughout the European Union. We also are collaborating with the UAIPIT Project, the University of Alicante Intellectual Property and Information Technology Project. 

 

Please visit “OUR CLIENT” section to find out some of our clients trademarks in Italy and abroad.


BEFORE THE REGISTRATION – TRADEMARK SEARCH

 

IS A TRADEMARK SEARCH NECESSARY BEFORE FILING?

Before filing your application it is strongly suggested to conduct a search of the Italian Patent And Trademark Office (UIBM) to determine if there is a registered or pending mark that is identical and/or similar to yours. Remember that not only the Italian trademarks are in force in Italy, also the Community trademarks and the International trademarks designating Italy are valid in Italy.

 

You can search for free Italian registered trademarks.

 

Otherwise you can ask our attorney to do so for you. When you request our trademark availability opinion  our attorneys do a trademark search and carefully analyze search results in order to crucially limit the risk for your application to receive objections and oppositions.


HOW CAN I DO A TRADEMARK SEARCH?

You can conduct a search for free of the Italian Patent And Trademark Office (UIBM). You sould also do a search in the other trademark database in force in Italy, the OHIM database regarding Community trademarks and the WIPO database regarding International trademarks designating Italy.

 

To do a search, please visit our search your trademark related web page.

 

Otherwise you can ask our attorney to do so for you. When you request our trademark availability opinion  our attorneys do a trademark search and carefully analyze search results in order to crucially limit the risk for your application to receive objections and oppositions.


ITALIAN TRADEMARK REGISTRATION PROCEDURE

 

WHAT TERRITORY IS COVERED BY THE ITALIAN TRADEMARK REGISTRATION?

The registration will be in force in the  Italian territory.


HOW MUCH DOES IT COST TO REGISTER MY TRADEMARK?

Register your Italian Trademark  today for EUR 380 (+Govt.), it will be in force for 10 years!

 

Govt. fees  are  EUR 192 for the trademark registration in one class of goods/services.

 

If you decide to protect the trademark in more than one class of goods/services, a fee of EUR 79 for each additional class is required.

 

During the evaluation of your trademark application by the Italian Trademark Office, if there are any objection we will response for free. Otherwise, if an opposition will be filed by the owner of a previous registered trademark,  you will need to pay an office action fee if you wish for our  attorney to draft a response on your behalf. This is between  EUR 400 and EUR 800 depending on the complexity of the response required. Our trademark availability opinion service crucially limit the risk of opposition.


DO I HAVE TO HIRE AN ATTORNEY WHEN FILING TO REGISTER MY TRADEMARK?

Yes, if you don’t have a valid Italian Address.  Applicants have to comply with all requirements of the trademark statutes and rules and may be required to respond to legal issues raised by the Italian Trademark Office (UIBM). Because the application process can be complex, all applicants through the Trademarkitaly.it website are managed by Italian lawyers and trademark attorney. The UIBM will communicate with our attorney, and our attorney will revert to you explaining the case in English.


WHAT ARE THE TRADEMARK APPLICATION REQUIREMENTS?

Requirements for trademark application are the following:

 

1 – Name of the applicant, physical or legal person.

2 – Applicant address.

3 – Representative address in Italy.

4 – Name of the logo of the mark;

5 – List of the goods or services according to the Nice classification of Goods and services;

6 – The payment of  fee;

7 – Power of Attorney signed by applicant.


MAY I ADD GOODS/SERVICES AFTER FILING MY APPLICATION?

No, you may just limit the goods/services claimed on your application.

Our trademark availability opinion makes the process very easy for you, our attorney will properly classify goods/services according to your indication and will provide to you a list for confirmation.


HOW LONG DOES IT TAKE TO OBTAIN THE REGISTRATION?

The trademark registration process can take a minimum of 8 to 12 months to complete (with no objection or opposition). However the trademark protection begins from the filing date.

 

Once you submit your application, we will review your data and payment, and if we will contact you by e-mail if we require additional information from you. We then file the trademark application in front of the trademark Office normally within 2 working days. Sometimes, the process can take longer if there are delays getting responses from clients or if there are further clarifications required.

 

All applications for the registration of a trademark in Italy are managed by Italian lawyers and trademark attorneys at Mericolegal IP Law Firm in Rome, Italy.

 

The procedure for obtaining the trademark registration in Italy is an examination procedure is administered by the Italian Patent and trademark Office (Ufficio Italiano Brevetti e Marchi – UIBM) which comprises three main steps:

 

a. UIBM Examination

 

Once we have filed your application with the UIBM, they will assign a “filing date” as of the date the application was received. The protection of your trademark begin from the filing date. A few months after the application is filed, an Examiner at the UIBM will review the application and determine whether the trademark may be registered. In particular, UIBM’s examiner performs an examination, which includes the formalities examination and the examination as to absolute grounds for refusal, especially goods/services classification and descriptiveness. UIBM will not examine relative grounds for refusal (trademarks already filed and registered as well as other third party earlier rights). See related section SEARCH for more information.

 

b. Publication and third party possible Opposition

 

The second part of the procedure is the publication of the application in so far the result of the examination has been positive. Once published there is a three-month opposition period. ‘Opposition’ is a procedure that starts before UIBM when a third party requests the Office to reject an Italian trade mark application invoking a previous trademark right (Italian, Community, International designating Italy). When an opposition is filed, the proceedings will include an exchange of observations from both the opponent and the applicant (the ‘parties’). After considering these observations, and if an agreement has not been reached between the parties, the Opposition Division of UIBM will decide either to reject the contested application totally or in part. If the opposition is not well founded it will be rejected. If the Italian Trademark Application is not totally rejected, and provided there aren’t other oppositions pending, it will proceed to registration.

 

c. Registration

 

In the absence of any objections or oppositions, the Italian Patent and Trademark Office will register the mark.  An application will be registered when the following conditions have been met: the UIBM examination of the trade mark has raised no objections or the objections raised have been waived; and either no opposition has been filed, or any opposition filed have been rejected.


WHY THE UIBM CAN REFUSE THE REGISTRATION?

An application will be registered when the following conditions have been met: the UIBM examination of the trade mark has raised no objections or the objections raised have been waived; and either no opposition has been filed, or any opposition filed have been rejected. Consequently, the registration is refused when an objection have not been waived or an opposition is estimated.

 

To lose an opposition, the marks do not have to be identical and the goods/services do not have to be the same. It may be enough that the marks are similar and the goods/services are related.  

 

You can search for free Italian registered trademarks.

 

Otherwise you can ask our attorney to do so for you. When you request our trademark availability opinion  our attorneys do a trademark search and carefully analyze search results in order to crucially limit the risk for your application to receive objections and oppositions.


AFTER THE REGISTRATION

 

WHAT RIGHTS ARE GRANTED BY THE REGISTRATION OF A MARK?

The exclusive rights granted by the registration of a mark consist of the following:

 

•  exclusive use of the mark in the Italian market.
•  the right to prevent non- authorized third parties from using an identical or similar mark for products or services identical or similar to the ones under the registered mark.
•  the right to prevent by administrative proceedings the registration of marks that can be confused with your own.
•  the right to request the cancellation of subsequent marks that become confused with yours.
•  the right to transfer, sell or license the mark like any other company asset.


HOW LONG WILL BE IN FORCE THE REGISTRATION?

Trademark registration in Italy lasts 10 years, renewable indefinitely for 10-year periods.


IS IT COMPULSORY TO USE A TRADE MARK?

In Italy , the holder of a trade mark must use the mark in trade in a real and effective way and in relation to the products and services for which the mark has been registered within 5 years from the application date.
It is normally the holder who makes use of the mark by placing it on goods. However, there are many other ways to use a mark, e.g. in advertising.


ARE THERE ANY SANCTIONS FOR NOT USING A TRADE MARK?

Is it possible to incur in an application for revocation, i.e. an action filed by a third party arguing that:

 

– the trademark’s owner has failed to put the trademark into genuine use during the five years following registration or for a period of five consecutive years and there are no proper reasons for non-use;

– the trademark has become generic in respect of the goods and services it is registered as a consequence of its use in the market; or

– the use of the trademark is capable to mislead the public.


HOW DO I ENFORCE MY TRADEMARK AGAINST INFRINGERS?

If someone is infringing your trademark, you can send a cease & desist letter to stop the violation.

If you would like to send a cease & desist letter, please visit our Cease and Desist Letter Services page. 

If the infringer does not stop the infringing use upon receipt of your cease & desist letter, you can file a lawsuit against them for trademark infringement.  In a lawsuit for trademark infringement, the Court may grant injunctive relief which stops the other party from using the mark identical/similar to your registered trademark. You may also obtain economic damages, the consumption of the goods that bear the trademark,  and consumption of the facilities that allow the infringer  to reproduce the trademark.


HOW CAN I MAKE MONEY WITH MY TRADEMARK?

You can sell your trademark and you can also grant a trademark license.

An Italian trademark may be sold without the underlying goodwill, i.e. you can sell your trademark registration with no other facilities. A trademark license should include appropriate provisions dealing with goods quality control, whereby the licensee provides warranties as to quality of relevant goods/services and the licensor has rights to inspection and monitoring.

If you would like to be assisted by our Lawyers, please visit our contract service page. 


THE REGISTRATION MAY BE REVOKED OR DECLARED INVALID?

A trademark registration may be revoked or declared invalid for the following reasons:

 

– as a consequence of a law suit filed by the owner of a previous registered trademark rights in force in Italy.

– if the trademark’s owner has failed to put the trademark into genuine use during the five years following registration or for a period of five consecutive years and there are no proper reasons for non-use;

– if the trademark has become generic in respect of the goods and services it is registered as a consequence of its use in the market; or

– if the use of the trademark is capable to mislead the public.


PRIVACY

 

DOES TRADEMARKITALY.IT CONFIDENTIALLY HOLD MY INFORMATION PROVIDED ON THE WEBSITE?

Yes. We acknowledge that the information you provide us are confidential according to Art. 9 of the Italian Attorney Code. Our Law firm will maintain the confidentiality thereof and protect your information.

Personal information e.g. name, address and e-mail address provided by you will only be used in connection with fulfilling your request of the application or the respective service and for the purpose of executing your instructions.


PAYMENT

 

MAY I PAY BY PAYPAL OR CREDIT CARD?

Yes, our “apply on-line” form allows you to pay by you PayPal account as well as by your credit card via the PayPal payment system. 

For PayPal security policy, please visit: PayPal safety and security related webpage


MAY I PAY WITH BANK TRANSFER?

Yes, you can also pay by bank transfer. If you wish to pay by bank transfer please email us info@trademarkitaly.it.


Share Button